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Robert J. Schoenberg
RIKER, DANZIG, SCHERER, HYLAND & PERRETTI LLP
Headquarters Plaza
One Speedwell Avenue
Morristown, New Jersey 07962-1981
(973) 538-0800
Attorneys for Plaintiff
Fujitsu General America, Inc.

FUJITSU GENERAL AMERICA, INC.,

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
CASE NO.

Plaintiff,
, U.S.D.J.

Hon.
vs.
BEST COMFORT ZONE, INC.,
d/b/a GREENDROPLET.COM,
KAMIL MATYNIA; JOHN DOES 1-10
and XYZ COMPANIES 1-10,

COMPLAINT
and
JURY DEMAND

Defendants.

Plaintiff, Fujitsu General America, Inc. (“Fujitsu” or “Plaintiff”), by and through its
attorneys, Riker, Danzig, Scherer, Hyland & Perretti LLP, for its Complaint alleges as follows:
JURISDICTION AND VENUE
1.

This is an action for trademark infringement, trademark dilution, copyright

infringement and unfair competition arising under the Trademark Act of 1946, 15 U.S.C. 1051,
et seq., as amended (‘the Lanham Act”) and unfair competition and deceptive trade practices
under pendent state statutes and common law.
2.

The jurisdiction of this Court over this action is conferred by 28 U.S.C. §§1331,

1338(a) and 1338(b), and under its supplemental jurisdiction under 28 U.S.C. §1367(a).

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3.

This Court has personal jurisdiction over Defendants because Defendants solicit

business in the State of New Jersey and within this judicial district and elsewhere and the acts
giving rise to the cause of action occurred within this judicial district and elsewhere, and the
harm done occurred within this judicial district and elsewhere.
4.

Venue in this district is proper under 28 U.S.C. § 1391.
PARTIES

5.

Fujitsu is a corporation organized and existing under the laws of Delaware and

has its principal place of business at 353 Route 46, Fairfield, New Jersey 07004. Fujitsu is an
indirect subsidiary of Fujitsu General Limited (“FGL”), headquartered in Kawasaki, Japan.
6.

Upon information and belief, Defendant Best Home Comfort Zone, Inc.

(“Comfort Zone”) is a corporation organized and existing under the laws of the State of Illinois,
with an address at 260 Cortland Avenue, Suite 7, Lombard, Illinois, 60148.
7.

Upon information and belief, Comfort Zone operates and controls the online and

retail business of Defendant Greendroplet.com.
8.

Upon information and belief, Defendant Kamil Matynia is an individual and

resident of the State of Illinois, with an address at 9062 West Heathwood Circle, Niles, Illinois
60714.
9.

Upon information and belief, Kamil Matynia is a Principal or officer of Comfort

Zone and its associated business, Greendroplet.com. In that capacity, he directs, operates and/or
is responsible for the content of the website Greendroplet.com (http://www.greendroplet.com ).
The listed mailing address for Greendroplet.com is 260 Cortland Avenue Suite 7, Lombard,
Illinois, 60148.

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10.

Defendant John Does 1-10 are unknown persons who may also operate or be

responsible for the content and/or operation of the website Greendroplet.com.
11.

XYZ Companies 1-10 are unknown fictitious entities which may also operate or

be responsible for the content and/or operation of the website Greendroplet.com.
BACKGROUND
12.

Fujitsu is a leading manufacturer of “Mini-Split” HVAC systems under the brand

name “Halcyon”. Like most cooling systems, Fujitsu’s Halcyon Mini-Split systems utilize an
outdoor compressor but they eliminate the need for bulky ductwork in attics and basements by
using copper tubing to carry the compressed refrigerant directly from the compressor to a wallmounted or ceiling-mounted blower unit.
13.

Fujitsu’s trademarks associated with the Halcyon Mini-Split systems (the “Fujitsu

Marks”) have achieved widespread recognition and fame within the HVAC industry, and among
the consuming public. Fujitsu is the owner of the following registered trademarks and/or the
party responsible for enforcing the following pertinent registered trademarks in the United States
on behalf of FGL:
Registration Number

Trademark

Goods and Services
Air Conditioners

Reg. No. 2,482,274

Air Conditioners

Reg. No. 2,813,964

Air Conditioners

Reg. No. 2,813,964

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Reg. No. 4,049,448

14.

Air Conditioners

Fujitsu is the owner of the following registered copyrighted works or the party

authorized to enforce the following pertinent registered copyrighted works in the United States
on behalf of Fujitsu General Limited (Kawasaki, Japan): Fujitsu Halcyon Full Line Catalog,
Registration No. TX-7-696-594 (attached hereto as Exhibit A.)
15.

Fujitsu currently provides two levels of limited warranties to original purchasers

of its Halcyon Mini-Split Systems depending on the model purchased: a six year compressor
warranty / two year parts warranty and a seven year compressor warranty / five year parts
warranty. Both limited warranties exclude labor.
16.

In its marketing and promotional materials, Fujitsu utilizes the following

distinctive logos to advertise its limited warranty services:

17.

Because Fujitsu's Halcyon Mini-Split systems require extensive pre-sale and post-

sale support and involve working with potentially dangerous chemical refrigerants, the above
warranties provided by Fujitsu are valid only for units purchased as new from an authorized
Fujitsu dealer.
18.

Authorized dealers are not allowed to sell Fujitsu Halcyon Mini-Split Systems on

the Internet, through any on-line retailer or similar e-tailing web site.

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19.

Fujitsu has adopted this policy because the necessary pre-sale and post-sale

support cannot be adequately provided and verified if the product is sold over the Internet or by
non-authorized dealers.
20.

Accordingly, a purchaser of a Fujitsu Halcyon Mini-Split system will only receive

Fujitsu’s limited warranty if the system is purchased from a Fujitsu authorized dealer.
21.

Defendants sell HVAC equipment to the public, as well as to contractors and

commercial property managers. This equipment includes Gas Boilers, Mini-Split Systems, Floor
Heating Systems, Radiators and Water Heaters, among many other HVAC related products.
22.

Defendants are not, and have not at any time, been an authorized dealer of Fujitsu

products and are not authorized to offer any warranties on behalf of Fujitsu.
DEFENDANTS’ CONDUCT
23.

Defendants operate one or more websites on which they offer for sale numerous

Fujitsu heating and air conditioning products (the “Fujitsu Products”) including, but not limited
to, the following model products: AGU9RLF, 12RLFCD, 18RLFCC, and AGU15RLF.
24.

In connection with the marketing, advertising and sale of Fujitsu Products,

Defendants utilize the following Fujitsu registered trademarks and service marks:

25.

An image of the Defendants’ website homepage as of January 8, 2015 is

reproduced below. Defendants’ unauthorized use of the Fujitsu Mark is identified by black
arrows.

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26.

On the product listing page for the Fujitsu products offered by Defendants, the

following Fujitsu registered marks are displayed without permission or license:

27.

As an example, the image below taken from Defendants’ website illustrates the

unauthorized use of the Fujitsu Marks by Defendants:

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28.

For each of the Fujitsu Products that the Defendants offer, the Defendants have

created a separate web page which also prominently displays – without permission or license –
Fujitsu’s registered trademarks and service marks and copyrighted warranty logos. An example
of Defendants’ infringing conduct is set forth below:

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29.

In addition to using an identical warranty logo to that used by Fujitsu, Defendants

also provide language on their website which implies that the Fujitsu products sold by Defendants
“come with” and are covered by a Fujitsu warranty:

30.

Defendants’ use of Fujitsu’s Marks, copyrighted warranty logos, and the statement

that Fujitsu Products “come with” a “5 year parts and 7 year compressor warranty,” taken
together falsely imply that the Fujitsu products sold by Defendants are warranted by Fujitsu.
31.

On May 22, 2013, Fujitsu’s counsel sent a letter to Defendants demanding that

Defendants cease and desist their practice of using misleading advertising materials and
discontinue infringing Fujitsu’s trademarks and copyrights. See Exhibit B.
32.

Defendants responded by email, on or about June 5, 2013, indicating that they

would comply with Fujitsu’s letter. See Exhibit C.
33.

Despite Defendants’ promises, they failed to remove the infringing images,

trademarks and improper warranty statements from their websites.
34.

On December 23, 2014, Fujitsu again wrote to Defendants demanding that

Defendants cease and desist their practice of using misleading advertising materials and
discontinue infringing Fujitsu’s trademarks and copyrights. See Exhibit D.
35.

As of the date of the filing of this Complaint, Defendants have failed to comply

with Fujitsu’s demands.
36.

Defendants’ misleading statements and infringements have caused Fujitsu, and

continue to cause Fujitsu, irreparable harm and damage.

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37.

Defendants’ misleading statements and infringements have caused a diminution

and tarnishment of the reputation of Fujitsu’s famous trademarks among customers and potential
customers.
38.

Unless Defendants are restrained from making misleading claims, Fujitsu will

continue to be irreparably harmed.
39.

Unless Defendants are restrained from infringing Fujitsu’s trademarks and

copyrights, Fujitsu will continue to be irreparably harmed.
FIRST CAUSE OF ACTION
(Unfair Competition – 15 U.S.C. §1125(a))
40.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 39

above as if fully set forth herein.
41.

Defendants’ acts of misrepresentation of the nature, characteristics and quality of

Fujitsu, its authorized dealers and its warranties have allowed and continue to allow Defendants
to unfairly compete with Fujitsu and its authorized distributors in violation of Section 43(a) of
the Lanham Act, 15 U.S.C. §1125(a).
42.

Defendants’ acts described above are deliberate and willful.

43.

Defendants’ acts of unfair competition have caused great and irreparable injury to

Fujitsu in an amount that cannot be ascertained at this time and, unless restrained, will cause
further irreparable injury, leaving Fujitsu with no adequate remedy at law.
SECOND CAUSE OF ACTION
(Trademark Infringement – 15 U.S.C. §1114)
44.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 43

above as if fully set forth herein.

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45.

Defendants’ use in commerce of the following trademarks on and in connection

with the sale of its products and on its website is without permission or consent of Fujitsu, is
likely to cause confusion, to cause mistake, to deceive and mislead customers and potential
customers as to the source or origin of Defendants’ products, or to believe that Defendants’
products are associated with, authorized by, sponsored by or warranted by Fujitsu.
46.

Defendants’ use as described above is willful and deliberate.

47.

Defendants’ use as described above has caused great and irreparable harm to

Fujitsu and, unless restrained and enjoined by this Court, will continue to cause great and
irreparable damage, loss, and injury to Fujitsu, its trademark, goodwill and reputation, leaving
Fujitsu with no adequate remedy at law.
48.

Such acts constitute trademark infringement in violation of Section 32 of the

Lanham Act, 15 U.S.C. §1114.
THIRD CAUSE OF ACTION
(Trademark Dilution – 15 U.S.C. §1125(c))
49.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 48

above as if fully set forth herein.
50.

Defendants commenced their willful conduct after Fujitsu’s marks became

famous.

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51.

Defendants’ acts concerning Fujitsu, its authorized dealers and its warranties,

have, without justification, blurred, tarnished and diminished the reputation of Fujitsu’s famous
trademarks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).
52.

Defendants’ use described above is deliberate and willful.

53.

Defendants’ acts of dilution have caused great and irreparable injury to Fujitsu in

an amount that cannot be ascertained at this time and, unless restrained, will cause further
irreparable injury, leaving Fujitsu with no adequate remedy at law.
FOURTH CAUSE OF ACTION
(Copyright Infringement)
54.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 53

above as if fully set forth herein.
55.

Fujitsu is the owner and or party responsible for the enforcement of the following

registered copyrighted works in the United States: Fujitsu Halcyon Full Line Catalog,
Registration No. TX-7-696-594 (attached hereto as Exhibit A).
56.

By its actions described above, specifically the unauthorized copying, digital

storage, display and dissemination of these works to the public, Defendants have infringed and
will continue to infringe Fujitsu’s copyrights.
57.

Defendants’ actions as described above are willful and deliberate.

58.

Defendants’ actions as described above have caused great and irreparable harm to

Fujitsu and, unless restrained and enjoined by this Court, will continue to cause great and
irreparable damage, loss, and injury to Fujitsu, leaving Fujitsu with no adequate remedy at law.
59.

Such acts constitute copyright infringement in violation of 17 U.S.C. § 101 et seq.

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FIFTH CAUSE OF ACTION
(Deceptive Trade Practices – New Jersey)
60.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 59

above as if fully set forth herein.
61.

Defendants have engaged in deceptive trade practices in connection with the sale

and advertisement of merchandise, namely Fujitsu Products.
62.

Defendants’ acts described above constitute deceptive trade practices in violation

of N.J.S.A. 56:4-1 et seq.
63.

Defendants’ acts described above are deliberate and willful.

64.

Defendants’ acts have caused great and irreparable injury to Fujitsu, including but

not limited to damage to its goodwill and reputation, in an amount that cannot be ascertained at
this time and, unless restrained, will cause further irreparable injury, leaving Fujitsu with no
adequate remedy at law.
SIXTH CAUSE OF ACTION
(Unfair Competition – New Jersey)
65.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 64

above as if fully set forth herein.
66.

Defendants’ acts have allowed and continue to allow Defendant to unfairly

compete with Fujitsu in violation of N.J.S.A. 56:4-1 et seq.
67.

Defendants’ acts described above are deliberate and willful.

68.

Defendants’ acts of unfair competition have caused great and irreparable injury to

Fujitsu, including but not limited to damage to its goodwill and reputation, in an amount that

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cannot be ascertained at this time and, unless restrained, will cause further irreparable injury,
leaving Fujitsu with no adequate remedy at law.
SEVENTH CAUSE OF ACTION
(Trademark Dilution – New Jersey)
69.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 68

above as if fully set forth herein.
70.

Defendants’ acts have, without justification, tarnished and diminished the

reputation of Fujitsu’s famous trademarks in violation of N.J.S.A. 56:3-13.20.
71.

Defendants’ use described above is deliberate and willful.

72.

Defendants’ acts of dilution have caused great and irreparable injury to Fujitsu in

an amount that cannot be ascertained at this time and, unless restrained, will cause further
irreparable injury, leaving Fujitsu with no adequate remedy at law.
EIGHTH CAUSE OF ACTION
(Common Law Unfair Competition)
73.

Fujitsu repeats and realleges the allegations set forth in paragraphs 1 through 72

above as if fully set forth herein.
74.

By their actions, Defendants have misappropriated Fujitsu’s valuable goodwill at

no cost to Defendants, resulting in Defendants unfairly benefiting from same in violation of the
common law of New Jersey.
75.

The aforesaid acts of Defendants constitute unfair business practices for the

purpose of diverting actual and potential business from Fujitsu and constitute unfair competition
and have resulted in substantial damage to Fujitsu’s business, reputation and goodwill in
violation of the common law of New Jersey.

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76.

Defendants’ acts described above are deliberate and willful.

77.

By reason of Defendants’ acts, Fujitsu has and will continue to suffer damages to

its business, reputation and goodwill and loss of sales and profits Fujitsu would have made but
for Defendants’ acts.
78.

The conduct of Defendants has injured Fujitsu and unless enjoined will continue

to cause great, immediate and irreparable injury to Fujitsu. Fujitsu is without adequate remedy at
law.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Fujitsu General America, Inc. respectfully requests that
judgment be entered in its favor and against Defendants, jointly and severally, for the following
relief:
A.

That Defendants be preliminarily and permanently enjoined from using Fujitsu

trademarks, service marks and any trademark so similar as to be likely to cause confusion;
B.

That Defendants be preliminarily and permanently enjoined from copying,

reproducing, preparing derivative works from or otherwise using Fujitsu copyrighted materials in
violation of Fujitsu’s exclusive rights granted by 17 U.S.C. § 106;
C.

That Defendant be preliminarily and permanently enjoined from selling or

offering for sale Fujitsu Products;
D.

That Defendants be required to account to Fujitsu for all profits realized from

Defendants’ sale of Fujitsu’s Products and for all damages sustained by Fujitsu on account of the
aforesaid acts of trademark infringement, trademark dilution, copyright infringement and unfair
competition and that said damages be trebled.

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E.

That Defendants be required to pay Fujitsu for statutory damages based upon

Defendant’s acts of copyright infringement.
F.

That Defendants be ordered to conduct a program of corrective advertising in

various media, which shall be to the satisfaction of, and approved by, Fujitsu.
G.

That Defendants be required to submit all proposed promotional material to the

Court or to the Court’s designee to assure compliance with requirements and obligations under
the Lanham Act.
H.

That Fujitsu be awarded its costs and reasonable attorney fees incurred herein.

I.

That Fujitsu be awarded such other and further relief as the Court may deem

appropriate.
JURY DEMAND
In accordance with Fed. R. Civ. P. 38 and Local Civil Rule 38.1, Fujitsu hereby demands
a trial by jury on each claim of the Complaint so triable.
RIKER, DANZIG, SCHERER, HYLAND
& PERRETTI LLP
Attorneys for Plaintiff
Fujitsu General America, Inc.
By: ____s/ Robert J. Schoenberg
Robert J. Schoenberg
One Speedwell Avenue
Morristown, New Jersey 07962-1981
Email: rschoenberg@riker.com

Dated: January 13, 2015

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CERTIFICATION OF NON-ARBITRABILITY
Pursuant to Local Civil Rule 201.1(d)(2), the undersigned attorneys for Plaintiff, Fujitsu
General America, Inc., certify that this action is not eligible for arbitration under Local Civil Rule
201.1 because the relief sought in the Complaint primarily consists of a demand for preliminary
and permanent injunctive relief, as well as damages believed to be in excess of $150,000.00,
exclusive of interest, costs and any claim for punitive damages, and involves complex issues of
trademark and copyright law.
CERTIFICATION PURSUANT TO LOCAL CIVIL RULE 11.2
Pursuant to Local Civil Rule 11.2, the undersigned attorneys for Plaintiff, Fujitsu General
America, Inc., certify that with respect to the matters in controversy herein, neither Plaintiff nor
Plaintiff’s attorney is aware of any other action pending in any court, or of any pending
arbitration or administrative proceeding, to which this matter is subject.
RIKER, DANZIG, SCHERER, HYLAND
& PERRETTI LLP
Attorneys for Plaintiff
Fujitsu General America, Inc.
By: ____s/ Robert J. Schoenberg
Robert J. Schoenberg
One Speedwell Avenue
Morristown, New Jersey 07962-1981
Email: rschoenberg@riker.com

Dated: January 13, 2015

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